It Only Took 13 Years: The Federal Circuit's First Derivation Proceeding Decision — Patents: Post-Grant Podcast
“While the ultimate question of whether a patent applicant derived a claimed invention from another inventor is one of fact, the determination of whether the accused deriver conceived is a question of law, which is based upon...more
In this episode of our Post-Grant Podcast series, Andy Zappia and Ted Merkel delve into the complexities of the least-used proceeding created by the America Invents Act (AIA): namely derivation proceedings. The discussion...more
Glob. Health Sols. LLC v. Selner, 148 F.4th 1363 (Fed. Cir. 2025) - The Federal Circuit recently issued its first precedential decision addressing derivation proceedings under the America Invents Act (“AIA”). A derivation...more
The U.S. Court of Appeals for the Federal Circuit (the court) issued its first precedential opinion to an appeal from a derivation proceeding at the Patent Trial and Appeal Board (PTAB) under the Leahy-Smith America Invents...more
More than a decade after the enactment of the America Invents Act (AIA), the Federal Circuit has issued its first opinion addressing an AIA derivation proceeding. In Global Health Solutions LLC v. Selner, the court clarified...more
On August 26, in Global Health Solutions LLC v. Selner, the Federal Circuit reviewed its first derivation proceeding. The patent applications at issue claimed the same or substantially the same method for preparing an...more
On August 26, 2025, in its first post-America Invents Act (“AIA”) review of a derivation proceeding before the Patent Trial and Appeal Board (“PTAB” or “Board”), the United States Court of Appeals for the Federal Circuit...more
The Federal Circuit recently issued its first review of a derivation proceeding, a rarely used proceeding provided for by the America Invents Act (AIA)....more
In one of the first decisions regarding derivation proceedings under the America Invents Act (AIA), the US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s finding that an application...more
In Glob. Health Sols. LLC v. Selner, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) addressed its first-ever derivation proceeding under the Leahy-Smith America Invents Act of 2011 (AIA). Prior to passage...more
GLOBAL HEALTH SOLUTIONS LLC v. SELNER - Before Stoll, Stark, and Goldberg (sitting by designation). Appeal from the Patent Trial and Appeal Board. The Federal Circuit affirmed the Board’s rejection of a derivation challenge,...more
The Federal Circuit’s recent decision in Global Health Solutions LLC v. Selner is its first review of a rare patent dispute resolution process under the America Invents Act (AIA). The decision serves as a warning that proving...more
In its first precedential review of an AIA derivation proceeding, the Federal Circuit held that to prove derivation, a petitioner has the burden of showing that the petitioner conceived the claimed subject matter and...more
Global Health Solutions LLC v. Selner, Appeal No. 2023-2009 (Fed. Cir. Aug. 26, 2025) - In our Case of the Week, the Federal Circuit conducted its first review of a derivation proceeding under the America Invents Act that...more
On April 19, 2024, the USPTO published a long-awaited Notice of Proposed Rulemaking (NPRM) that followed its April 2023 Advance Notice of Proposed Rulemaking (ANPRM). The proposed rules package, Patent Trial and Appeal Board...more
In its second-ever Final Written Decision in a derivation proceeding, the Patent Trial and Appeal Board (“PTAB”) determined that a patent application for a biocidal composition and method of producing said biocidal...more
The PTAB recently issued a rare decision instituting a derivation proceeding, in Global Health Solutions LLC v. Selner, DER2017-00031 (“GHC”). The GHC institution decision provides several lessons for future petitioners...more
A petitioner can use derivation proceedings to challenge the inventorship of an invention claimed in a published pending application or an issued patent. Only applications and patents having at least one claim with an...more
On November 20, 2019, the Patent Trial and Appeal Board (PTAB) issued updated guidance for trial procedures in inter partes review (IPR) and post grant review (PGR) proceedings at the US Patent and Trademark Office in the new...more
Kilpatrick Townsend partners John Alemanni, Tina McKeon, and Wab Kadaba recently presented to clients on the topic of “PTAB Trials Insights & Strategies – Leveraging Recent Developments at the PTAB” at the annual Kilpatrick...more
The Situation: In a Hatch-Waxman litigation, the claims recite oxymorphone with less than 0.001% of an impurity called 14-hydroxymorphinone. The prior art includes confidential communications from the FDA to oxymorphone...more
In the first-ever final written decision in a post-American Invents Act (AIA) derivation proceeding, the Patent Trial and Appeal Board (PTAB) found that the petitioner had not shown that an inventor named in the respondent’s...more
Recently, the PTAB issued its first ever final written decision in a post-AIA derivation proceeding in Andersen Corporation v. GED Integrated Solutions, Inc., Case DER2017-00007, Paper 57 (PTAB Mar. 20, 2019), finding that...more
Orange Book-Listed Patents Prove to Be Popular Targets for AIA Challenges - On March 13, 2018, Chief Administrative Patent Judge Ruschke of the Patent Trial and Appeal Board (PTAB) released findings of the Patent Office’s...more
Introduction - In proving a patent invalid (or infringed), all claim limitations must be considered. A recent case illustrates this maxim for both derivation under 35 U.S.C. § 102(f) and obviousness under 35 U.S.C. §...more